Assignment of trademarks
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Assignment refers to the transfer of proprietary rights in a trademark from the owner to another party. For an assignment to be valid, it must be in writing and signed by both parties. The Trademarks Act outlines several sections governing trademark assignment, including requirements for registering assignments to maintain ownership. Key forms and timelines are also specified for properly documenting an assignment according to the law.
Assignment of trademarks
- 1. BY: S. PARVADAVARDINI Junior Associate Trademarks Department ALTACIT GLOBAL- CHENNAI
- 2. WHAT IS ASSIGNMENT? Transferring proprietary rights in the property of the proprietor can be referred to as Assignment . Section 2 (b) of the Trademarks Act, 1999 describes an Assignment as an assignment in writing by the act of the parties concerned .
- 3. RESTRICTIONS FOR ASSIGNMENT OF TRADEMARK Must be in writing. The transfer of rights should be through operation of law. The Assignment should not create multiple exclusive rights.
- 4. LAW RELATING TO ASSIGNMENT OF TRADEMARKS Section 37 of Trademarks Act, 1999: Pertains to a registered mark. Assignee gets the rights on the mark subject to conditions of registerablity imposed on the owner of the mark.
- 5. Section 38 of Trade Marks Act, 1999: The mark can be transferred with or without the goodwill of the business concerned Assignment can be with regard to all or some of the goods related to the mark
- 6. Section 39 of Trade Marks Act, 1999: Relates to assignment of unregistered trademarks Assignment with regard to all or some of the goods over which the proprietor claims ownership of the mark.
- 7. Section 40 of Trade Marks Act, 1999: Prohibits creation of multiple exclusive rights. The power to certify the validity of the registration rests with the registrar alone. Mark can be assigned in favor of two different persons if they are operating in different countries.
- 8. Section 41 of Trade Marks Act, 1999: Exception to the rule of multiple exclusive rights. Provides for assignment with territorial restrictions Section 42 of Trademarks Act, 1999: Procedure for assignment without transfer of goodwill. Has to be registered within 6 months from date of assignment. Extension can be sought for a maximum three months. Application to the registrar of trademarks for advertisement of the assignment to caution the public.
- 9. Section 43 of Trade Marks Act, 1999: Assignment of certification marks. Assignment or transmission cannot be made without the consent of the registrar, sought through application in prescribed manner Section 44 of Trade Marks Act, 1999: Assignment of associated trademarks Associated trademarks shall be transferred as a whole and not separately .
- 10. Section 45 of Trade Marks Act, 1999: Registration of Trademark. Application shall be made to the Registrar in the prescribed manner for registration of the assignment. Incase of dispute over the validity of the assignment, the Registrar may refuse to register until the dispute has been settled by a competent court. An assignment, which is not registered shall not be treated as proof of title to the assignment , unless directed otherwise Registrar, Appellate Board or the court.
- 11. REGISTRATION OF ASSIGNMENT TO A COMPANY For the purposes of sub-section (4) of section 46, the period within which a company may be registered as the subsequent proprietor of a registered trade mark upon application made under rule 68 of Trade Marks Rules, 2002 shall be six months from the date of advertisement in the Journal of the registration of the trade mark or such further period not exceeding six months as the Registrar may allow on application being made in Form TM-25
- 12. RULES FOR REGISTRATION OF TRADEMARK Trade Marks Rules, 2002 governs the procedure for registration of a trademark assignment. Rules 68- 79 deal with the procedures for registering the assignment of trademark.
- 13. FORMS INVOLVED IN TRADEMARK ASSIGNMENT TM 23- Joint request for registration by registered proprietor & transferee TM 24- When request is made by the transferee alone TM 20- Application of advertisement of Trademark TM 21-Extension for filing form TM 20 TM 18- Affidavit for verifying case accompanying application TM 17 & TM 19- Registrar’s Certificate of Approval TM 25- Registration of Assignment to a Company
- 14. PARTICULARS STATED IN THE APPLICATION Full name, address, and nationality of registered proprietor, or other assignor or Transmitter. Full name, address and nationality of transferee Description of transferee(calling or profession) Address of the principal place of business in India, if any, of the transferee. If there is no place of business in India state the address of the place of residence in India . If there is not even a place of residence in India state the address in the home country abroad and an address for service in India. Additional numbers may be given in a signed schedule on the back of the Form ……… Contd
- 15. …… Contd Date of acquisition of proprietorship Full particulars of the instrument of assignment or transmission, if any, or statement of case. Strike out any words not applicable Signature of assignor or transmitter or of his agent Signature of transferee or of his agent Name of the place of the appropriate office of the Trade Marks Registry
- 16. ASSIGNMENT INVOLVING TRANSMISSION OF MONEY If there is in force any law regulating the transmission of moneys outside India, the Registrar shall not register the title of a person who becomes entitled to a trade mark by an assignment which involves such transmission except on production of the permission of the authority specified in such law for such transmission.
- 17. ADVERTISEMENT OF ASSIGNMENT Trademark is transferred without goodwill Application to be made in Form TM 20. Registrar may call for further proof, if he is not satisfied. For Certification Marks reference identifying the Registrar's notification of approval has to be included in the application. A request for extension of time period can be sought under For TM 21
- 18. SEPARATE REGISTRATION Where pursuant to an application under rule 68, and as the result of a division and separation of the goods or services of a registration or a division and separation of places or markets, different persons become registered separately under the same registration number as subsequent proprietors of a trade mark, each of the resulting separate registrations in the names of those different persons shall be deemed to be a separate registration for all the purposes of the Act.
- 19. PARTICULARS TO BE ENTERED IN THE REGISTER The name and address of the assignee The date of the assignment Where the assignment is in respect of any right in the mark, a description of the right assigned The basis under which the assignment is made The date on which the entry is made in the register